Briefings > UK registration procedure

Steps in Registering a Trade Mark in the UK

1. Clearance search - optional but highly recommended

Before proceeding with trade mark filing, it is advisable to arrange for a trade mark clearance search on the appropriate Trade Mark Register(s). This will establish whether the mark is free for use. A common misapprehension is that if a mark has not already been registered in an identical form then all is well. No! The reality is that someone's statutory monopoly (which is what a registration is) will be infringed by unauthorised use of the same or similar trade mark in respect of the same or similar goods or services. Where the line is to be drawn for 'similarity' is where professional help is needed. Money spent on a professional clearance search is money well spent to prevent much larger financial wastages further down stream!

How much does this cost? This depends to some extent on the nature of the goods and services and hence the complexity of what needs to be protected, and also to what depth the search goes (preliminary/identical or near-identical or comprehensive) . Our searches not only include analysis and reporting, but also a legal opinion on the risk factor.

2. Can only trade mark attorneys register a trade mark?

Anyone (who has legal capacity) can apply for a trade mark, but since the actual process can get quite technical, it can be very advantageous to have a trade mark attorney do this for you. Trade mark attorneys who are registered as such on a Government Register are also regulated by the Intellectual Property Regulatory Board and have professional indeminity insurance. Attorneys on the Register have qualified by stringent professional examinations to know the law and practice of trade marks and have sufficient experience to be thoroghly relied upon for their judgment and guidance.  Many service providers lack the qualifications of an attorney.

3. The trade mark registration process

The trade mark attorney will file the trade mark before the Intellectual Property Office ('IPO' - formerly the 'UK IPO' and before that 'the Patent Office'). An application number is assigned and this will appear on the IPO website. After a relatively short period (often within the month, but an 'express' service can now also be requested) the mark will be examined and a report issued. If positive, the mark will be advertised for opposition purposes within a month. The opposition period is two months, but extendable to three if a third party requests it. If no one objects, the mark will be registered in the official journal and a registration certificate sent. The whole procedure could take as little as 6-8 months.

If, on the other hand, the examiner's report raises objections, this stage could be prolonged by several months (or more!). The mark may even be stopped in its tracks. Once past this post, if a third party raises objections during the opposition period, the process of getting through this (which again, may even ultimately end in failure, plus costs awarded against the applicant) could take quite a long time unless there is a speedy negotiation to settle differences. It is during these periods that the applicant sees most clearly the benefits of having a qualified attorney to act on his/her behalf. Only a minority of marks are opposed, however. Also, examiners are always helpful in trying to help the applicant through the examination obstacles. The result is that a very high percentage of marks applied for are registered, even if there is a bit of compromise needed along the way (in terms of scope of protection) to see it registered.

Since October 2007, examiners no longer object to a mark on the basis of earlier rights (called 'relative grounds' objection). But there is a new procedure whereby prospective opponents will be warned of the impending registration. The potential for opposition is thus increased, making it all the more advisable to instruct an attorney to deal with the procedure of registration.

Once registered, the trade mark remains in force indefinitely as long as the mark is renewed through payment of renewal fees every ten years.

4. Cost of procedure

Government fees start at £200 (or £170 when filed electronically), with an extra £50 for each class* above one. Professional fees are in addition. Please contact us at Cam Trade Marks to discuss the various cost options. We have special rates for SMEs who might be entitled to discounts.

*Goods and services are divided into 45 classes. Government fees may change.